The World Intellectual Property Organization (WIPO) announced that on September 25, 2018, the Government of Malawi agreed to join the Madrid Protocol (Protocol) and become its 102nd member. With the Protocol expected to come into force in Malawi on December 25, 2018, it will allow trademark applicants to file a single international trademark application in up to 118 jurisdictions that have adopted the Protocol.

As part of its instrument of accession, Malawi declared that the refusal period would be extended from 12 months to 18 months and beyond for oppositions, that intention to use a trademark when Malawi is designated in an international registration would be sufficient, and that the recordal of licenses in the international register would have no effect in Malawi.

While the Madrid System provides a streamlined and cost-effective process for trademark protection across a number of jurisdictions, the validity and enforceability of these registrations in African countries is a concern, particularly where these countries have not amended their legislation to recognize international registrations. Within the Malawian context, the Trade Marks Act no. 2 of 2018 came into force on October 1, 2018, recognizing international registrations designating Malawi as valid and enforceable. Registration of trademarks in relation to services is now also permitted; however, due to the lack of digitized records and implementing guidelines concerning international registrations, it appears that the Malawian Registry is unable to efficiently manage international applications under the Protocol at this stage.

Given the uncertainty regarding the enforceability of international registrations in Africa, applicants should investigate whether international registrations would be enforceable in the relevant African territories. If Malawi is a jurisdiction of interest, it is recommended that applicants continue filing national applications until the registry’s systems and guidelines are properly updated to give effect to the convenience and efficiency of the Protocol. It is also recommended that applicants seek to protect their trademarks in the appropriate service classes.

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